Ex Parte Webster et al

Patent Trial and Appeal Board

Feb 19, 2019

13540091 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/540,091 07/02/2012 Noah Webster
109610 7590 02/21/2019
Bookoff McAndrews, PLLC
2020 K Street, NW
Suite 400
Washington, DC 20006
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
11710.0008-01 9224
EXAMINER
SMITH, KAITLYN ELIZABETH
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
02/21/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@bomcip.com
Kross@bomcip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOAH WEBSTER, TIMOTHY DALBEC,
HUY PHAN, WILLIAM WIZEMAN, WILLIAM EV ANS, and
MATTHEW PRESTA
Appeal2018-003403
Application 13/540,091
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Noah Webster et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 23-27, 35, 36, and 41--46. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is Boston Scientific
Scimed, Inc. Appeal Br. 2.
2 The Examiner indicates that claims 18, 21, 22, and 33 are allowable. Final
Act. 10; see Appeal Br. 4. No other claims are pending.
Appeal2018-003403
Application 13/540,091
THE CLAIMED SUBJECT MATTER
Claim 23, reproduced below, is illustrative of the claimed subject
matter.
23. An energy delivery device, comprising:
a body having a proximal portion, a distal portion, and a
lumen extending along the proximal and distal portions;
a member extending through the lumen;
an electrode unit at the distal portion of the body attached
to the member, and having a plurality of circumferentially spaced
electrodes, wherein distal ends of the plurality of
circumferentially spaced electrodes converge toward one
another; and
a handle, wherein the member is coupled to a distal end of
the electrode unit, wherein the member is configured to move
reciprocally relative to the body via actuation of the handle,
reciprocal movement of the member is configured to transition
the electrode unit between a first, radially-collapsed
configuration and a second, radially-expanded configuration, the
member is biased in a distal direction by a resilient member or
spring disposed proximally of the electrode unit to bias the
electrode unit in the first, radially-collapsed configuration, and
the electrode unit is transitioned from the first, radially-collapsed
configuration to the second, radially-expanded configuration by
pulling the member in a proximal direction.
REJECTIONS
I. Claims 23, 24, 35, 36, 41, 43, 44, and 45 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Kaplan
(US 2006/0247618 Al, pub. Nov. 2, 2006) and Ford
(US 2005/0288664 Al, pub. Dec. 29, 2005).
II. Claims 25-27, 42, and 46 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Kaplan, Ford, and Murphy
(US 2005/0061771 Al, pub. Mar. 24, 2005).
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Application 13/540,091
DISCUSSION
Rejection I
In rejecting independent claim 23, the Examiner finds that Kaplan
discloses an energy delivery device, substantially as claimed (see Final Act.
3--4), but does not disclose "the specifics of a handle" (id. at 4). However,
the Examiner finds that
Ford teaches an analogous device including a handle (12, 12',
12 "), wherein the member is configured to move reciprocally
relative to the elongated body via actuation of the handle ([0058-
0082]), wherein reciprocal movement of the member is
configured to transition the electrode unit between a first
radially-collapsed configuration and a second, radially expanded
configuration, and bias a member in a distal direction by a
resilient member or spring (208) disposed proximally of the
electrode unit to bias the electrode unit in the first, radially-
collapsed configuration ( [ 0065---006 7]).
Id. The Examiner determines that it would have been obvious to modify
Kaplan's device to include Ford's handle in order to "provide a variety of
different mechanisms to selectively control the advancement and retraction
of electrodes." Id.
The Examiner also finds that Ford does not disclose "the electrode
unit being transitioned from the first, radially-collapsed configuration to the
second, radially-expanded configuration by pulling the member in a
proximal direction. In fact, Ford teaches the opposite, that the electrode unit
is transitioned to the radially-expanded configuration by pushing the
member in a distal direction." Id. However, the Examiner determines that it
would have been obvious "to substitute pulling for pushing of the member to
transition the electrode unit as claimed, since it has been held that a mere
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Application 13/540,091
reversal of the essential working parts of a device involves only routine skill
in the art." Id. at 4--5.
Appellants argue the Examiner's conclusion of obviousness is in error
because the proposed modification of the combination of Kaplan and Ford
would not be a mere reversal of essential working parts. Reply Br. 3---6; see
also Appeal Br. 14--15 (suggesting that the rejection improperly relies on a
per se rule to circumvent the requisite fact-specific analysis to establish a
rational underpinning to support the legal conclusion of obviousness). We
agree that a sustainable case of obviousness has not been established.
Kaplan discloses an electrode unit ( energy transfer device 2) having
arms 4 configured in the form of basket 6, which "may expand upon
activation by the user." Kaplan ,r,r 54--56. However, Kaplan does not
further elaborate on how the user would activate the basket to expand.
Ford discloses that trigger lever 30 is mechanically coupled to
electrodes 28, such that squeezing lever 30 causes electrodes 28 to slide
within lumens in basket arms 20. Ford ,r 44. Squeezing lever 30 causes
pinion 200 to engage and advance rack 202 of rod 204, which moves
electrodes 28 from a retracted position (FIG. 3) to an extended position
(FIG. 4), in which electrodes 28 extend through openings 56 in basket arms
20. See id. ,r,r 44, 62; Figs. 8, 9. Releasing lever 30 causes rod 204 to move
in the reverse direction due to biasing by actuator spring 206, which results
in electrodes 28 returning to the retracted position. See id. ,r,r 62---64. In
other words, actuating Ford's handle pushes the member (rod 204) in a distal
direction to extend the electrodes into a radially extended position, and the
resilient member (actuator spring 206) biases the member in the proximal
direction to retract the electrodes.
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Application 13/540,091
Thus, it would not be a mere reversal of essential working parts to
modify the combination of Kaplan and Ford such that pulling the member in
a proximal direction transitions the electrodes from a radially-collapsed
configuration to a radially-expanded configuration, as claimed. See Reply
Br. 5---6. Instead, Appellants submit, "[m]odifying Ford so that a proximal
pulling of actuator rod 204 causes electrode elements 28 to extend out of
openings 56 would require at a minimum a significant rearrangement of
Ford's components." Id. at 5.
As discussed above, Ford teaches a handle in which a member (rod
204) is biased in the proximal direction and is pushed in the distal direction
by squeezing a trigger (lever 30). Modifying the combination of Kaplan and
Ford to arrive at the claimed subject matter, including, in particular, a handle
in which the member to which the electrodes are coupled is biased in a
distal direction to bias the electrode unit in a radially-collapsed
configuration and the electrode unit is transitioned from a radially-collapsed
configuration to a radially-expanded configuration by pulling the member in
a proximal direction, would not involve a mere reversal of parts to achieve
the same result. Rather, such a modification would require an actuation
mechanism that operates differently to achieve a different result.
Specifically, such a modification would require a member biased in the
distal direction and pulled in the proximal direction by manually actuating a
trigger to overcome the biasing force (instead of a member biased in the
proximal direction and pushed in the distal direction by manually actuating a
trigger to overcome the biasing force), as well as an electrode unit that is
coupled to the member so as to be transitioned from a radially-collapsed
configuration to a radially-expanded configuration by pulling the member in
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Application 13/540,091
the proximal direction (rather than coupled so as to be transitioned to the
radially-expanded configuration by pushing the member in the distal
direction). Here, the Examiner errs by not articulating sufficient reasoning,
supported by rational underpinnings, as to why a person having ordinary
skill in the art would have been prompted to modify the Kaplan/Ford device
in such a manner. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007) (stating that "[r]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness" (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that independent claim 23 is
unpatentable based on the cited references. On this basis, we do not sustain
the rejection of independent claim 23, or dependent claims 24, 35, 36, 41,
43, 44, and 45, under 35 U.S.C. § 103(a) as unpatentable over Kaplan and
Ford.
Rejection II
The Examiner's rejection of claims 25-27, 42, and 46 relies on the
same proposed combination of Kaplan and Ford that we find deficient for
the reasons discussed above. See Final Act. 7-10. The Examiner relies on
Murphy for teaching additional features, but does not articulate any findings
or reasoning that would cure the aforementioned deficiencies in the
combination of Kaplan and Ford. See id. Accordingly, for the same reasons
discussed above, we do not sustain the rejection of claims 25-27, 42, and 46
under 35 U.S.C. § 103(a) as unpatentable over Kaplan, Ford, and Murphy.
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DECISION
The Examiner's decision rejecting claims 23-27, 35, 36, and 41--46 is
REVERSED.
REVERSED
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